What is required to establish infringement of each of the intellectual property rights described in section A? What evidence is necessary in this context?
Intellectual Property (3rd edition)
Infringement of a patent involves the exploitation of a patented invention by a person other than the owner of the patent and without the agreement of the owner in relation to a product or a process falling within the scope of protection of the patent. The exploitation refers to any of the following acts:
(a) Making, importing, offering for sale, selling, using the product or stocking such product for the purpose of offering for sale, selling or using when the patent has been granted in respect of a product;
(b) Using the process or doing any of the acts referred above in respect of a product obtained directly by means of the process when the patent has been granted in respect of a process.
Infringement of a certificate for a utility innovation involves the exploitation of the utility innovation by a person other than the owner of the certificate and without the agreement of the owner in relation to a product or a process falling within the scope of protection of the utility innovation. The exploitation means any of the following acts:
(a) Making, importing, offering for sale, selling, using the product or stocking such product for the purpose of offering for sale, selling or using when the certificate has been granted in respect of a product;
(b) Using the process or doing any of the acts referred above in respect of a product obtained directly by means of the process when the certificate has been granted in respect of a process.
There is a breach of confidence where the following three elements is established by the plaintiff to the satisfaction of the court:
(a) The information which the plaintiff is seeking to protect is of a confidential nature
(b) The information in question was communicated in circumstances importing an obligation of confidence; and
(c) There must be an unauthorised use of that information to the detriment of the party who communicated it.
A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or registered user of the trade mark using by way of permitted use, uses a mark which is identical with it or so nearly resembling it as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the trade mark is registered in such a manner as to render the use of the mark likely to be taken either-
(a) as being use as a trade mark;
(b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular, or other advertisement, issued to the public, as importing a reference to a person having the right either as registered proprietor or as registered user to use the trade mark or to goods with which the person is connected in the course of trade; or
(c) in a case in which the use is use at or near the place where the services are available or performed or in an advertising circular or other advertisement issued to the public, as importing a reference to a person having a right either as registered proprietor or as registered user to use the trade mark or to services with the provision of which the person is connected in the course of trade.
The unlawful use in the course of trade which can give rise to institution of proceedings in court for an injunction to prevent unlawful use of a protectable geographical indication includes:
(a) The use of any means in the designation or presentation of any goods that indicates or suggests, in a manner which mislead the public, that the goods in question originate in a geographical area other than the true place of origin.
(b) Any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention.
(c) Any use of a geographical indication which, although literally true as to the geographical origin of the goods, falsely represents to the public that the goods originate in another country, territory, region or locality or
(d) Any use of a geographical indication identifying wines or sprits not originating in the place indicated by that geographical indication, even where the true origin of the wines or spirits is indicated or the geographical indication is accompanied by expressions such as ‘kind’, ‘type’, ‘style’ or ‘imitation’.
Copyright is infringed by a person who, without the consent or licence of the owner of the copyright, imports an article into Malaysia for the purpose of:
(a) selling, letting for hire, or by way of trade offering or exposing for sale or hire the article;
(b) distributing the article for the purpose of trade or for any other purpose to an extent that it will affect prejudicially the owner of copyright;
(c) by way of trade, exhibiting the article in public
where he knows or ought reasonably to know that the making of the article was carried out without the consent or licence of the owner of the copyright.
A person infringes the rights conferred by the registration of an industrial design if he, without licence or consent of the owner of the industrial design,
(a) applies the industrial design or any fraudulent or obvious imitation of it to any article in respect of which the industrial design is registered;
(b) imports into Malaysia for sale, or for use for the purposes of any trade or business any article to which the industrial design or any fraudulent or obvious imitation of it has been applied outside Malaysia without the licence or consent of the owner; or
(c) sells, or offers or keeps for sale, or hires or offers or keeps for hire any of the articles as described above while the registration is still in force.
In order to establish infringement of a patent or a registered design, the holder must show that an unlawful use of the invention/design has occurred or been largely prepared. For patents, all features of the patent claim, interpreted in light of the patent description and drawings, need to be present in the infringing object. If the infringing object is equivalent to the patented invention, this may also suffice.
In order to establish infringement of a trademark, the infringing mark must either be identical to the trademark and applied for the same goods or services, or there must be a likelihood of confusion between the marks. For well-known trademarks, establishing unreasonable exploitation of, or damage to, the trademark’s distinctiveness or goodwill will suffice.
In order to establish infringement of copyright, the proprietor must show that an unlawful reproduction of copies or communication to the public of the work has occurred.
In order to establish infringement of a business name, the holder must show that there is a likelihood of confusion between the protected and infringing business names.
In order to establish infringement of a trade secret, or a technical aid, product etc. according to the Marketing Act, unpermitted use needs to be established.
Photographs, drawings, market surveys and expert evidence may serve as evidence for establishing infringement of intellectual property rights.
The tests for infringement in respect of the main forms of IPRs are provided below. Very often, especially in relation to registered IPRs, a claim for infringement will beget a counterclaim for invalidity or non-use, as the case may be. One therefore has to keep an eye out for potential vulnerabilities before commencing infringement proceedings.
- Patents. Proving patent infringement depends on the type of patent in question – different rules apply for product and process patents.
- Where the invention is a product, there will be infringement when the infringer makes, keeps, disposes of, uses, or imports the product.
- Where the invention is a process, there will be infringement when the infringer uses the process or offers it for use in Singapore when he knows, or ought to know, that such use is unauthorized by the patent holder.
- Where the invention is a process, there will be infringement when the infringer disposes of, keeps, uses, or imports any product obtained directly by means of that process.
Notably, where the invention is a process for obtaining a product, the burden of proof is reversed: if the product is new or likely to have been made by the patented process, the alleged infringer will have to prove his product is not made by the patented process.
A person may also be liable for indirect or secondary patent infringement by inducing or inciting the infringement of the patent.
If the competing marks and/or goods or services are merely similar (and not identical), then a likelihood of confusion must be proven. If the trade mark owner is able to prove that his trade mark is well known in Singapore, he may also sue for infringement even though his mark is not registered.
A person who authorizes another to commit a primary infringement will also be liable for authorizing infringement.
Lastly, a person who trades in an article knowing that it is an infringing article will be liable for secondary infringement.
More broadly, there will also be infringement if a person makes anything which enables a protected article or its components to be manufactured in Singapore or elsewhere.
Requirements for establishing infringement
Any non-authorized use of the intellectual property right (unfair competition).
All sort of evidence is allowed but that one contrary to the morality or the law. Examination of parties is not allowed.
Requirements for establishing an Infringement
Any non-authorized use of the intellectual property right (unfair competition).
All sort of evidence is allowed but that one contrary to the morality or the law. Examination of parties is not allowed.
Appellations of Origin
Any non-authorized use of the intellectual property right (unfair competition).
Copyright and other rights
Requirements for establishing an Infringement
Any non-authorized use of the intellectual property right as well as any violation of the author’s moral rights.
All sort of evidence is allowed but that one contrary to the morality or the law.
Examination of parties is not allowed but only when the case is decided by a civil court.
Any violation of the holder’s rights.
Reservation of rights
Any non-authorized use of the intellectual property right.
Any non-authorized use of the intellectual property right.
All sort of evidence is allowed but that one contrary to the morality or the law.
For patents, evidence to establish infringement including followings:
Firstly, evidence that the plaintiff has the standing to sue against the alleged patent infringer;
Secondly, evidence that the technical solution alleged for infringement comprises technical features identical or equivalent to all the technical features recited in the claim;
Thirdly, evidence that the patent in issue has been exploited by the alleged infringer without permission of the patentee.
For trademark, the infringement may be established under below condition:
The use of the questionable mark which is identical with or similar to the mark with prior rights is confirmed to be the use of trademark and its use on same or similar goods is likely to cause confusion.
Infractions of the intellectual property rights occur when they are used by a third party without the authorization of the right holder.
The useful evidence is the following:
- audit certificates that demonstrate the infringement,
- advertisement that used a product or service protected by intellectual property rights,
- experts report that validate the unauthorized use,
- samples of the infringing product.
- Other documents.
Patent infringement is found whenever a third party, without the consent of the patent holder, commits any of the following:
- Produces a product of the patented invention;
- Offers or supplies the product of the patented invention in the market, uses such a product or imports or stores this product for offer or supply in the market or for a similar use;
- Urges a third party to commit any of the aforementioned acts;
- In the event where the patent concerns a method, it is considered patent infringement if any of the following acts are committed by a third party without the consent of the patent holder:
- The use of the method which is the subject of the patent;
- In respect of any product which is the direct result of the method, to commit any of the acts mentioned in the first two bullet points hereinabove;
- To urge a third party to commit any of the above;
- The provision by a third party- without the consent of the patent holder- of any means related to the invention, to any person, for the sole purposes of working the patent, when that third person knows or it is obvious under the circumstances, that these means are suitable or were intended to be used for the working of the patent.
Copyright infringement is found when any third party, without the consent of the copyright owner, engages in any of the following acts vis-à-vis the protected work or of a substantial part thereof (provided none of the limited and exhaustive exceptions set out in the relevant law, apply): reproduction, advertising, sale, leasing, distribution, lending and presentation to the public of the original work and copies thereof; broadcasting to the public, transmission, presentation to the public via satellite, cable broadcasting; translation, adaptation and any other form of adjustment; presentation of the works to the public- with wire or wireless, along with the authors having the right to render their works accessible to the public in the manner they decide. Moreover, the applicable law sets out a specific act which constitutes infringement when it comes to an architectural work, a computer software programme, a database, a previously unpublished work.
Trade mark infringement is found when a third party, without the authority of the right holder, uses in its commercial dealings a mark which is:
- Identical to the registered trade mark in relation to goods/ services which are identical to the goods/ services in relation to which the mark has been registered;
- Identical or similar to the registered mark and due to its identity or similarity with the mark or the identity or similarity of the goods/ services covered by the registered mark and the mark, there is a likelihood of confusion of the public, including the likelihood of association with the registered trade mark;
- Identical or similar to the registered mark, used in relation to dissimilar goods/ services to the ones for which the trade mark has been registered, if the registered trade mark enjoys a reputation in Cyprus and the use of the mark, without due cause, would result to, without any cost, a benefit as a result of the distinctive character of the registered mark, or it would be harmful to its distinctive character or goodwill.
‘Use of a mark’ may be comprised of the following acts:
- the affixing of the mark on goods or on their packaging;
- the supply of goods or their trading or their possession for trading or the supply or provision of services under the mark;
- the importation or the exportation of goods under the mark;
- the use of the mark on professional written material and in advertising.
Design infringement occurs when a third party uses the design without the consent of the right holder. ‘Use’ may include the manufacture, offer, supply in the market, importation, exporting or use of the product unto which the design has been embodied or applied, as well as the storage of the product bearing the design for the aforementioned purposes.
The tort of passing off requires proof of the following elements to be substantiated:
- Proof of goodwill/ reputation attached to the goods/ services of the trade mark owner.
- Proof of misrepresentation of the goods/ services offered by the defendant as goods/ services emanating from the trade mark owner. Intention is not relevant in this assessment;
- Proof of likelihood of damage resulting from the deception.
To establish a patent infringement, the claimant has to evidence the existing patent claims and then compare the established claims with the product allegedly infringing the patent.
Infringement of trademark can be established by showing that the disputed sign is (i) identical to the earlier trademark and intended for the same goods or services, or (ii) identical to the earlier trademark and intended for similar goods or services such that a likelihood of confusion results, or (iii) similar to the earlier trademark and intended for the same or similar goods or services such that a likelihood of confusion results. However, where the proprietor has not used the trademark in relation to the goods or services for which it is claimed for an uninterrupted period of five years, he may no longer assert his right to the trademark, unless there are proper reasons for non-use.
To establish design infringement, the design right owner must show that the disputed object has the same essential features and thus produces the same overall impression as the registered design.
Copyright infringement requires the owner to show that the infringer has used its work without authorisation. This implies to assess which elements are to which extent common to both works, whether they cover the essential part of the work and whether such elements fulfil (alone or in combination) the requirements for copyright protection.
Owners of PGI/POA must show the PGI/POA is used without meeting the requirements set out in the requirements specification of the PGI/POA.
Establishing topography infringement requires the right owners to show that there is an unauthorised reproduction of the topography.
Plant variety right owners must show that unauthorised production or reproduction of the propagating material of the protected variety or conditioning for the purpose of propagation is taking place, or that unauthorised materials of the protected variety are sold and marketed.
Committing a crime against an IP right, as disclosed in question 16, will also be basis for suing for infringement of the respective IP right, through civil procedure. Other actions of third parties that are not comprised in the crimes against IP rights that tend to damage the IP titleholder may also be the basis for IP infringement lawsuits.
As for integrated circuit topographies, article 36 of its law states that an infringement occurs in the following cases: reproduction of the topography, in whole or in part, by any means, including its incorporation into an integrated circuit; importation, sale, or distribution by any other means, for commercial purposes, of a protected topography or an integrated circuit which incorporates a protected topography; or importation, sale, or distribution by any other means, for commercial purposes, of a product which incorporates an integrated circuit incorporating a protected topography, only in so far as this circuit continues to contain an illegal reproduction of a topography.
The evidence necessary is the one that proves the infringement or the imminence of infringement. It is noteworthy that the Brazilian Superior State Court understands that it is not mandatory to prove that the infringement caused damages to the IP titleholder, once its violation entails harm to the titleholder.
As for copyrights, an evidence of access to the copyrighted material is necessary to qualify an infringement, whenever the work in question was not made public or had limited exposition.
As for trade-secrets, the infringement will be possible if the plaintiff demonstrates that the trade-secret in question was obtained through unlawful means.
At the outset of court proceedings, the claimant's 'particulars of claim' must set out in a succinct way the alleged legal basis for the claimant's claim and the facts relied upon to substantiate liability.
Once the exchange of pleadings has completed and the factual and technical issues between the parties are apparent, disclosure may be given, and witness evidence and/or expert evidence may submitted by the parties in support of their respective cases, in accordance with the procedure outlined above. The burden of establishing infringement lies upon the party alleging it, the standard being the balance of probabilities. However in some contexts the evidential burden may shift.
It is an infringement of a patent to do any of the following in the UK while the patent is in force without the consent of the proprietor of the patent:
a. Where the invention is a product: make, dispose of, offer to dispose of, use, import, or keep the product (whether for disposal or otherwise) in the UK.
b. Where the invention is a process: use the process or offer it for use in the UK with knowledge, or when it is obvious to a reasonable person in the circumstances, that the use of the process without the consent of the proprietor would be an infringement; or make, dispose of, offer to dispose of, use, import, or keep any product obtained directly by means of that process.
Usually, any disclosure obligation upon the party alleged to infringe in respect of the alleged infringing product or process is satisfied by the provision of a 'product and process description'.
When the invention is a process, there may be a presumption that products are made using the patented process, shifting the evidential burden to the party alleged to infringe to show that the end product was made by non-infringing means.
Infringement of trade secret / breach of confidence
Pursuant to the English common law (Coco v Clark (1969) RPC 41; Saltman v Campbell  3 All ER 413; BBC v HarperCollins  EWHC 2424 (Ch)), it is a tort to use in an unauthorised manner, to the detriment of the originating party, information which has the necessary quality of confidence and is subject to an obligation of confidence. To have the necessary quality of confidence, the information must not be in the public domain or form part of an employee's general skill and knowledge. The requisite obligation of confidence may exist pursuant to a contractual obligation or the circumstances in which it was imparted.
Pursuant to the Trade Secrets Directive, it is an infringement to acquire a trade secret in an unlawful way, to use or disclose an unlawfully acquired trade secret or to use or disclose a trade secret in breach of a contractual or other duty.
Registered trade marks
A person will infringe a registered trade mark if he uses in the course of trade a sign:
(i) which is identical to the trade mark, in relation to identical goods or services to those for which the mark is registered;
(ii) where because the sign is (i) identical to the registered trade mark and used in relation to similar goods or services to those for which the mark is registered, or (ii) similar to the registered trade mark and used in relation to identical or similar goods or services to those for which the mark is registered, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association.
(iii) that is identical or similar to the registered trade mark, in relation to goods or services (whether or not identical or similar), where the registered trade mark has a reputation in the UK and the use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character of or the repute of the registered trade mark.
The assessment of the elements making up the torts, particularly those categorised as (ii) and (iii) above, is multifactorial (or 'global').
Pursuant to the English common law (Reckitt & Colman Products v. Borden  UKHL 12; Starbucks v. British Sky Broadcasting  UKSC 31), the tort of passing off requires the establishment of three elements: (i) there is goodwill attached to the claimant's goods or services in the UK; (ii) there has been a misrepresentation by the defendant leading or likely to lead the public to believe that the goods or services they offer are the goods or services of the claimant or there is some other authorised link with the claimant; and (iii) the claimant suffers damage as a result.
It is an infringement of a UK registered design and a European Community registered or unregistered design, to use the design and any design which does not produce on the informed user a different overall impression. For these purposes, 'use' includes making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. However, for unregistered Community designs, the proprietor may only prevent such acts if the contested use derives from copying the protected design.
UK unregistered design right is infringed by a person who, without the licence of the design right owner, reproduces the design by making articles that are exactly or substantially to that design, or making a design document recording the design for the purpose of enabling such articles to be made. Again, an act of copying is a necessary component of the tort.
UK unregistered design right is also infringed ("secondary infringement") by a person who, without the licence of the design right owner, imports into the UK for commercial purposes, has in his possession for commercial purposes or sells, lets for hire or offers or exposes for sale or hire, in the course of a business, an article which is, and which he knows or has reason to believe is, an infringing article (i.e. exactly or substantially to the protected design).
Copyright is infringed by a person who, without the licence of the copyright owner, does any of the acts restricted by copyright. The restricted acts are copying the work, issuing copies of the work to the public, renting or lending the work to the public, performing showing or playing the work in public, communicating the work to the public, making an adaptation of the work or doing any of the above in relation to an adaptation, and authorising another to do any of the above. Infringement may be by the doing of a restricted act in relation to the protected work as a whole or any substantial part of it.
Where it is shown that an article is a copy of a work and that copyright subsists or has subsisted at any time, the court will presume, until the contrary is proved, that the article was made at a time when copyright subsisted in the work. There is a presumption of infringement if: (i) the infringer had access to the original work, and (ii) the infringing work and the original are similar.
It is a "secondary infringement" of copyright to import an infringing copy (other than for private and domestic use), to possess or deal with an infringing copy, to provide means for making copies, to permit use of premises for an infringing performance and to provide apparatus for an infringing performance, where the infringer knows or has reason to believe that the item he deals in or acts he performs are infringing.
Patents: That the defendant exploits the invention’s user by literal infringement or by the doctrine of equivalents. Exploitation means manufacture, sale, offer for sale, use or importation of a patent product or a product produced in a patented process.
Copyrights: A person who performs in relation to a work any of the acts below or who authorizes another person to perform any such act, without the consent of the copyright owner, infringes the copyright, unless such act is permitted:
Reproduction, broadcasting and making a work available to the public with respect to all categories of works;
Public performance in respect of a literary work, dramatic work, musical work and sound recording;
Making a derivative work and performing any act set forth above in respect of the aforesaid derivative work with respect to a literary work, artistic work, dramatic work and musical work;
Rental in respect of a sound recording, cinematographic work and computer program.
The presentation or description of the original work must show the date of its creation.
Trademarks/Designs: That the infringer sold/offered for sale or performed a prohibited act with respect to the proprietary right at issue within the borders of the State of Israel.
Unless otherwise provided by the IPC, the burden of proof to establish infringement rests with the claimant pursuant to Article 9 of the CC.
Under French law, the general principle is that infringement should be assessed in relation to overall similarities and not to differences.
Therefore, the claimant should establish, regarding:
• copyright, that the counterfeiting work reproduces the original features of the prior work;
• neighbouring rights, that the counterfeiting work reproduces the original features of the prior work;
• design, that the counterfeiting design or model produces the same visual impression that the prior design or model;
• trademark, that the litigious sign is identical or similar to the prior trademark, designates identical or similar products or services and creates a likelihood of confusion for the consumer;
• collective and certification marks, that the litigious sign is identical or similar to the prior mark, designates identical or similar products or services and creates a likelihood of confusion for the consumer;
• patent, that the litigious product reproduces or has been manufactured following a process that reproduces the patent’s claims;
• supplementary protection certificates, that the litigious product reproduces or has been manufactured following a process that reproduces the patent’s claims;
• utility certificates, that the litigious product reproduces or has been manufactured following a process that reproduces the utility certificates claims;
• plant varieties, that the plant varieties are being produced offer to sell, marketed, imported or exported or that material for the reproduction of the plant varieties is hold or used to that end;
• semiconductors, that the protected semiconductors are reproduced or commercially exploited or detained, used, shipped, exported or imported for this purpose.
Pursuant to French procedure rules, infringement can be established by any means.
However, the following means are usually preferred to establish the existence and the extent of the alleged infringement:
• seizure: IPRs holders may request ex parte the authorization from the president of the Court of first instance to have a bailiff, possibly accompanied by the relevant expert(s) and/or police officer(s), enter the alleged infringer or a third party’s premises, to gather evidence of the infringement and, notably, seize or describe the infringing products or process, collect and copy any relevant documents demonstrating the infringement and the extent of the prejudice suffered (see. Copyright (Article L.332-1 and 4 of the IPC); Design (Article L.521-4 of the IPC); Patent (Article L.615-5 of the IPC); Plant varieties (Article L.623-27-1 of the IPC); Trademarks (Article L.716-7 of the IPC);
• customs withholding: IPRs holders may request from customs to hold allegedly counterfeiting goods (see. Copyright (Article L.335-10 of the IPC), Design (Article L.521-14 of the IPC); Patents (Article L.614-32 of the IPC); Plant varieties (Article L623-36 of the IPC); Trademarks (Article L.716-8 of the IPC); Geographical indications (Article L.722-9 of the IPC);
• expert reports either appointed by the judge or amicably requested from a party;
• investigation reports survey or witness statements;
• bailiff reports.
To establish infringement of any intellectual property right, the plaintiff must prove all facts of the case that sum up to a prohibited act; in general regardless of fault, intent or negligence.
In the absence of the consent of the proprietor of the patent, third parties are prohibited from:
- producing, offering, putting on the market or using a patented product, or importing or possessing the product for such purposes;
- using a patented method or offering the method for use; and
- offering, putting on the market, using or importing, or possessing for such purposes, a product obtained directly from a patented manufacturing method.
This also applies to equivalent infringements, where a third party does not use a feature of the claimed invention but an equivalent feature that has the same effect as the clamed feature, Section 9 Patent Act.
In accordance with Section 10 Patent Act a third party is also not allowed to supply or to offer to supply within Germany an essential element of the invention, when the third party knows or it is obvious, that such action is suitable and intended to be used for exploiting the invention.
(b) Utility models
The grounds for infringement of utility models are the same as for patent infringements.
(c) Confidential Information / Trade Secrets
Under the Act on the Protection of Trade Secrets, a trade secret may not be obtained through either unauthorized access to, appropriation or copying of documents, objects, materials, substances or electronic files that are under the lawful control of the owner of the trade secret and that contain the trade secret or from which the trade secret may be derived; or any other conduct which, in the particular circumstances, does not comply with the principle of good faith, having regard to honest market practice. In addition, a trade secret may not be used or disclosed by someone who obtained it in breach of the Act on the Protection of Trade Secrets or by violating an obligation to restrict the use of said trade secret or by violating an obligation not to disclose a trade secret. Furthermore, a trade secret shall not be obtained, used or disclosed by anyone who has obtained the trade secret through another person and knows or ought to know at the time of its obtaining, use or disclosure that that other person has used or disclosed the trade secret in breach of the Act on the Protection of Trade Secrets, especially if such use consists in the manufacture, offering for sale, placing on the market or importing, exporting or storing for such purposes of infringing products. Exceptions exist, however, where the trade secret is obtained, used or disclosed for a legitimate interest such as the disclosure of a criminal act or in the exercise of the freedom of speech and freedom of press.
The burden of proof for a violation of the Act on the Protection of Trade Secret is with the owner of the secret whereas the person who obtained, used or disclosed the trade secret has to proof that an exception to the prohibition applies.
In addition, using a third party's trade or business secret despite being obliged by law to keep it confidential, constitutes a criminal offence and can be punished with prison of up to two years or a fine. Furthermore, disclosing a third party's business secrets, thus committing an unlawful act, can establish an act of unfair competition.
(d) Trade marks
Without prior permission of the proprietor, third parties are prohibited to use
- an identical sign for identical products or services;
- a sign, which can create confusions, because of its identity or its similarity to the other sign and the products and services for which this sign stands for;
- an identical sign for different products and services, when the use takes unfair advantage of or when the use damages without justification the distinctive character or the repute of the trade mark which has a reputation in Germany.
(e) Business names
The grounds for infringement of a protected business name are the same as for trade mark infringements.
(f) Geographical indications
Indications of geographical origin may not be used in the course of trade for goods or services which do not originate from the place, area, territory or country which is designated by the indication of geographical origin if it is likely to mislead concerning the geographical origin should such names, indications or signs for goods or services of different origin be used. If the goods or services marked by an indication of geographical origin have special properties or a special quality, the indication of geographical origin may only be used in the course of trade for the corresponding goods or services of this origin if the goods or services have these properties or this quality. If an indication of geographical origin enjoys a particular reputation, it may not be used in the course of trade for goods or services of a different origin even if it is not likely to mislead concerning the geographical origin if use provides without good cause an opportunity for goods or services of a different origin to take unfair advantage of, or be detrimental to, the reputation of the indication of geographical origin or its distinctive character.
For geographical indications that are protected as collective trademarks, please see above d) Trade marks.
(g) Supplementary protection of creative property under competition law
Subject of supplementary protection is not the imitated product as such, but the particular manner of how a third party achievement that is worthy of protection is used and utilized for the purposes of competition. An act of unfair competition occurs where a person offers goods or services that are replicas of goods or services of a competitor if he
- causes avoidable deception of the purchaser regarding their commercial origin;
- unreasonably exploits or impairs the assessment of the replicated goods or services;
- dishonestly obtained the knowledge or documents needed for the replicas.
(h) Registered Design
According to Section 38a Design Act, a design infringement action can be brought where a third party manufactures, offers, puts on the market, imports, exports or uses a product which contains or uses the registered design, or possesses such product for the mentioned reasons. Also when, in the view of an informed user, a design produces the same overall impression as the earlier design.
A copyright infringement action can be brought for violation of the owner's exclusive rights set out in Sections 12 to 23 Copyright Act,
- right to publish the work,
- Right to be named as the author,
- Rights regarding distortion and other mutilation of the work
- Right of duplication,
- Right of distribution,
- Right of exhibition,
- Right of presentation of the work,
- Right of making the work available to the public,
- Broadcasting right,
- Rights of editing and rearrangement.
Regarding database rights, it is prohibited to copy and/or distribute the data base and/or to make it available to the public, Section 87b Copyright Act.
(j) Semiconductor topography rights
Under Section 6 Semiconductor Protection Act, third parties not having the owner's consent are prohibited from reproducing the topography and from offering, putting on the market or distributing, or importing for such purposes, the topography or the semiconductor product containing the topography.
(k) Plant variety rights
A plant variety right infringement action can be brought for violation of the owners exclusive rights to
- produce, to condition for purposes of propagation, to place on the market, to import or export propagating material of the protected variety, or
- to store propagating material of the protected variety for one of the purposes designated above,
to carry out acts in accordance with aforementioned regarding other plants or parts of plants, or products obtained directly therefrom, if propagating material was used in their production without the consent of the holder of the plant variety right, and the holder of the plant variety right did not have an opportunity to exercise his/her variety protection right with regard to this utilisation.
Generally speaking an IP rights is considered to be infringed when a third party starts using and exploiting the related rights without the IP owner's consent.
Particularly with regard to trademarks, the claimant should prove that third parties (i) are using signs which are identical to the prior trademark for identical goods or services; (ii) using signs which are identical or similar to the prior trademark for identical or similar goods or services and creates a likelihood of confusion for the consumer; (iii) are using signs which are identical or similar to a well-known trademark provided that the use of such sign cause to its user unfair advantage arising from the distinctive character of the well-known trademark and is detrimental for the well-known trademark's owner. In the latter case, under Article 20 of the ICP, as amended by LD 15/2019, a trademark owner may prevent third parties from using signs that are identical or similar to a well-known trademark even if such identical or similar signs are not used to indicate the source of goods or services. Therefore, under Article 20 of the ICP, as amended by LD 15/2019, even the "non trademark use" constitutes an infringement.
With reference to the design, the claimant should demonstrate that the counterfeited design or model produces the same visual impression as of the prior design or model.
As for the copyright the claimant should establish that third parties are exploiting the economic rights connected to the protected work for example reproducing, making available to the public or anyway using the copyrighted work without the prior authorization of the copyright holder.
In the patent related disputes, the claimant should prove the infringement, that is to say the unauthorized making, using, offering for sale or selling of any patented invention (the so called "direct infringement"). It should be noted that in the past, only direct infringement was codified in the IPC while indirect infringement was based on case law only. With the implementation of the Unified Patent Court Agreement by the Law no. 214/2016, Italy has introduced a specific rule on indirect infringement. More specifically under Article 66 (2bis) IPC a patent confers the patent owner the exclusive right to prevent any unauthorised third party from supplying or offering to supply any unauthorised person with means, relating to an essential element of that invention, for putting it into effect therein. This applies only when the third party knows, or should have known, that those means are suitable and intended for putting that invention into effect.
With reference to trade secrets, the trade secret holder should prove that a third party used or disclosed the trade secret without his/her consent. Under article 99 of the ICP as amended by Legislative Decree 63/2018, also the acquisition, use or disclosure of a trade secret shall be considered unlawful whenever a person, at the time of the acquisition, use or disclosure, knew or, under the circumstances, ought to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclosing the trade secret unlawfully. Moreover, article 99 of the ICP, as amended by Legislative Decree 63/2018, further specifies that the production, offering or placing on the market of infringing goods, or the import, export or storage of infringing goods for those purposes, shall also be considered an unlawful use of a trade secret where the person carrying out such activities knew, or, under the circumstances, ought to have known that the trade secret was used unlawfully.
To establish infringement of any intellectual property right, the plaintiff must establish its rights and prove all facts of the case that amount to a prohibited act;
• Patents, utility models: Greek courts generally apply the doctrine of equivalents, according to which due account must be taken of any element which is equivalent to an element specified in the claims. Thus, the scope of the claim may extend beyond its literal meaning. The same approach is also applied for plant varieties and semiconductor topographies.
• Registered designs: In order to establish infringement, the design owner must show that the allegedly infringing design produces on the informed user a similar impression. According to the law, in assessing the scope of protection, the degree of freedom of the designer in developing a design in relation to the technical requirements must be taken into consideration.
• Trademarks and unregistered marks: In order to establish infringement, the following must be established:
o Identity or similarity of the signs under comparison
o Identity or similarity of the products respectively covered
o Likelihood of confusion (including likelihood of association)
o In the case of famous marks, establishment of a link between the famous mark and the posterior sign and use, without just cause, of the posterior mark which would imply unfair advantage of or cause damage to the distinctive character or the repute of the prior mark
• Copyright: Violation of the owner's exclusive rights, such as unauthorized reproduction, adaptation, distribution, lending etc.
• Trade secrets: It is an infringement to acquire a trade secret in an unlawful way, to use or disclose an unlawfully acquired trade secret or to use or disclose a trade secret in breach of a contractual or other duty. The rights holder must prove his related rights (e.g. with registration certificates, invoices, samples of products, photos, advertising/marketing material etc) as well as the infringer's actions (with samples or photos of infringing goods, web site screen shots, etc). Survey evidence is useful for proving establishment of a mark in the market and extent of its use as well as the risk of confusion among consumers. Written affidavits, witness testimonies, market surveys and expert opinions/testimonies are also useful.
Patent: In case of infringement of product patent, it is essential for the plaintiff to establish that the product used by the defendant is identical or similar to the product patented by the plaintiff. However, in case of process patent, the onus of proof to establish that the process used by the infringer is to obtain a product identical to the product of the patented process. In view of the same, any form of documentary evidence may be produced before the court to establish that there is an infringement or non-infringement. Both the parties may also provide expert evidence in the form of affidavits.
Trademark: Infringement requires that the impugned mark be identical or similar to the senior mark, and typically used in relation to the same goods and services. Infringement actions can only be taken in relation to registered Trademarks. Further, plaintiff may be required to prove goodwill and reputation, deception, and damage or likelihood of damage to the plaintiff.
Copyright: Any unauthorised publication of the copyrighted work will constitute infringement.
Geographical indication: NA
Confidential information and know-how: Will depend on the contractual relationship between the parties.
Designs: For design infringement, it must be established that there has been a piracy of design (identical or similar design), and in that context, any form of documentary evidence, or infringing articles may be produced before the court as evidence.
To establish an infringement action of the intellectual property rights, we will need to prove that the infringer has the intention to cause confusion and/or bad faith, for which it will be necessary, the following documents (required documents):
- Invoices, with certain date.
- Sale ballots, with certain date.
- Advertisements with certain date.
- Bill of landing, with certain date.
- Sales volumes, with certain date.
- Certificates of trademarks, patents, industrial designs, etc., registered in the Andean Community and/or other countries worldwide.
- Prints of websites with certain date.
- Distribution contracts and/or any other type of contract stating any commercial linking between the holder of the intellectual property rights and the infringer.
- The volume of orders from persons interested in obtaining a franchise or license of the intellectual property rights in a particular territory.
Since most judicial infringement proceedings for IPRs are conducted via civil proceedings, the burden of proof is that applicable to civil proceedings, meaning that it is to be decided on the balance of probabilities. It is only with regard to criminal proceedings where the burden of proof must be proven beyond reasonable doubt.
To establish infringement, one must first of all prove to the court what rights they own, and the extent of the infringement committed by the respondent. In most cases knowledge of infringement is not actually required to be proven although this may affect the quantum of damages in the relevant case.
Patent infringement is established by factual and expert evidence showing that an article, method or system alleged to infringe a patent includes all the essential elements of at least one valid independent claim of the patent. In addition, factual evidence must be lead that shows that the Defendant or Respondent has performed one of the acts reserved for the patentee viz. a patentee has a right to exclude other persons from making, using, exercising, disposing or offering to dispose of, or importing the invention, so that he or she shall have and enjoy the whole profit and ad-vantage accruing by reason of the invention.
Design infringement is established by factual and expert evidence showing that an article, alleged to infringe a Registered Design has been made, imported, used, or disposed of in the class in which the design is registered and embodying the registered design or a design not substantially different from the registered design.
Trade Mark infringement is established by factual and expert evidence showing that:
(a) there is unauthorized use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;
(b) the unauthorized use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion;
(c) the unauthorized use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception: Provided that the provisions of this paragraph shall not apply to a trade mark registered under the previous Act.
Any evidence which establishes that the infringing trademark is used in relation to goods and services protected by registered trademark is sufficient. In the context of Patent, the evidence shall establish that the alleged infringing product reads over the claims of granted patent. In case of pharmaceutical patent, laboratory analysis, for example drug load have been accepted as sufficient evidence. Expert reports may also be used.
- Patents – establish (i) alleged infringer acted without the owner’s authorisation; (ii) alleged infringer exploited the invention as claimed by the patent; (ii) infringement was performed within the patent area (Australia).
- Trade marks – establish (i) the alleged infringer used the sign as a trade mark; (ii) the sign used is substantially identical with or deceptively similar to the registered trade mark; (iii) the use is within the jurisdiction.
- Geographical indications –
a. Certification trade mark – establish trade mark infringement.
b. Protected wine GI – establish (i) sale, importation or exportation of wine with a false or misleading description and presentation.
- Passing off – establish (i) the subsistence of some reputation or goodwill on the part of the plaintiff; (ii) deceptive conduct on the part of the defendant (actionable misrepresentation); (iii) injury/damage to goodwill of the plaintiff as a result of the conduct.
- Rights to prevent unfair competition (misleading and deceptive conduct) –
a. Section 18 of the Australian Consumer Law (ACL) – establish (i) person; (ii) engaging in conduct that is misleading or deceptive; (iii) in trade or commerce.
b. Section 29 of the ACL – establish (i) person; (ii) making proscribed false or misleading representation(s) in relation to goods or services; (iii) in trade or commerce.
- Copyright – establish (i) copyright subsists; (ii) infringement by doing an act comprised in the copyright; (iii) the infringer did not have permission or consent to exercise the infringed rights.
- Registered designs – establish (i) alleged infringer acted without the owner’s licence or authority (ii) alleged infringer makes, sells, hires or imports a product, or uses for trade or business a product, embodying a design that is identical or substantially similar in overall impression to the registered design, or authorises a third party top do any of those acts; (iii) within the jurisdiction.
- Plant breeder’s rights (PBRs) – establish (i) alleged infringer acted without the grantee’s authorisation; (ii) alleged infringer committed an act that would constitute infringement of the PBR in relation to propagating material of a plant variety in respect of which PBR have been granted.
- Circuit layouts – establish (i) eligible layout; (ii) the alleged infringer acted without the owner’s authorisation during the protection period; (iii) copies or authorises the copying of the layout in material form; makes or authorises the making of an integrated circuit in accordance with the layout; or commercially exploits or authorises the commercial exploitation of the layout in Australia if the person knows or ought reasonably to know, that he or she is not licensed by the owner of that right to do so.
- Breach of confidence – establish (i) there existed an obligation of confidence in relation to specific information; (ii) the information had the necessary quality of confidence; (iii) the use or disclosure was unauthorised; (iv) the breach resulted in the plaintiff suffering damage.
Patents: In order to establish infringement of patents, the intellectual property owner must show that an alleged infringer practices every element of an asserted claim. An infringer is one that “without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent.” 35 U.S.C. § 271(a). An IP holder may also accuse an alleged infringer of “inducing” infringement, wherein the alleged infringer provides for the infringement actually carried out by another. 35 U.S.C. § 271(b). Often, a comparison of a product or service to the claims of the patent is used to show element-by-element infringement. Experts may assist with this analysis.
Trademarks: In order to establish infringement of a trademark, the trademark holder must show that the accused infringer used the mark in commerce without its consent and that the unauthorized use was likely to deceive, cause confusion, or result in a mistake. Many times, the factual question at the heart of a trademark infringement claim rests on whether there is a likelihood of confusion between the challenged marks. Customer surveys relating to the level of confusion in the market are often used to show infringement.
Copyrights: In order to establish infringement of a copyright, a copyright owner must show two elements: (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original. Copying is demonstrated when someone who has access to a copyrighted work uses material substantially similar to the copyrighted work in a manner which interferes with a right protected by U.S. copyright law, namely 17 U.S.C. § 106. Section 106 protects the copyright owner’s right to reproduce the copyrighted work, prepare derivative works based upon the copyrighted work, distribute copies of the copyrighted work to the public, to perform the copyrighted work publicly, and to display the copyrighted work. Lay evidence as well as expert evidence can be used to show that certain works were improperly copied.
Trade Secrets: Claims for trade secret misappropriation can be brought under various state laws, as well as under federal law. While the requirements for each jurisdiction vary slightly, in general, a claim for trade secret misappropriation must include a claim that the plaintiff owned a trade secret, and that the defendant misappropriated that trade secret through non-sanctioned means, like theft. Absent clear evidence that a trade secret was misappropriated (for example, evidence of a former employee disclosing top-secret company information), trade secret misappropriation can also be proven through inference, like a comparison of similar products and a showing that the defendant had the possibility of access to restricted information through illicit means.